Video games offer a melting pot of intellectual property: trademark law, copyright law, and even patent law all come together in a delicious mix of intangible property. However, not all video game franchises are equal. Few can claim the same level of longevity, success, and nostalgia as Nintendo’s Mario Brothers series.

Among the most popular titles of the franchise is Mario Kart, a game in which characters from the franchise race each other in go karts. The characters repeat catch phrases, seek out power ups (invincibility, speed, etc.) and cartoonish weapons (banana peels, turtle shells, etc.), all with the singular goal of being atop the podium at the end of race. Over its 25+ years of existence, the game has resulted in significant sales, widespread nostalgia, and, unsurprisingly, numerous attempts from others trying to make money off of the characters. But a recent lawsuit in Japan brought media exposure to what might have been the greatest attempt yet to profit off the franchise: real life go-karting in Mario Brothers costumes in the streets of Tokyo.

How fun is that? From what I can tell, riders aren’t allowed to throw things at each other (thanks a lot, safety laws), but this tour would still be great. The attraction even attracted professional race car drivers. You don’t even need to provide your own costume, they’ve got a ton for you to choose from.

Race car drivers weren’t the only people to discover the tour. Nintendo’s lawyers did, too. I’d like to imagine they participated at least once before suing them, if only under the pretense of “fact development.” Nintendo sued and ultimately prevailed on claims of copyright infringement. The company has to pay Nintendo 10 million yen (about US$89,000) and can no longer hand out Mario Brothers character costumes.

It’s hard to quibble with Nintendo’s actions here. The MariCar company intentionally distributed character costumes in order to attract customers.

But what are Mario Kart fans supposed to do now? Well, there will be an official Super Nintendo World opening at Universal Studios Japan ahead of the 2020 Tokyo Olympics. The theme park will include a Super Mario World featuring Bowser’s castle, Peach’s Castle, and, yes, a “Mario Kart attraction.”

But if you prefer the thrill of participating in likely infringing activities, you can check out the Australia-based MUSHROOM RALLY race event purportedly coming to Denver, soon. Participants will have a chance to battle it out in Las Vegas for the championship race. Ticket prices are yet to be determined and are limited to just 600 participants. I suggest you read the fine print on the refund policy though – just a hunch…

Recently, we have been covering updates from a trademark infringement, dilution, and unfair competition action between Buc-ee’s and Choke Canyon, two rival Texas convenience stores with endless rows of gas pumps and checkout lanes (everything’s bigger in Texas, you know; even gas stations). About a month ago, a Texas jury found that the Choke Canyon alligator logo infringes on Buc-ee’s beaver logo:

But as I pointed out when covering the jury’s verdict, it wasn’t clear exactly why these two logos are confusingly similar and to what extent. Could it be the fact that both of the logos contain cartoon animals, who wear hats, who face right, who are smiling, who have red tongues, against a yellow-ish background? Some combination of these features? Additional features? The jury’s verdict doesn’t say; the jury only decided that the Choke Canyon logo infringed, but they weren’t asked to explain why.

However, the jury did send one note to the judge while deliberating, giving some clue as to infringement. In that note, the jury asked, “Does the logo to be considered by the jury in rendering an infringement judgment include a version without words?” To which the Judge responded, “Yes.” Not much insight, but at least we know the jury did not focus on Choke Canyon’s circular ribbon.

The reasons for the finding of infringement often have considerable implications. After such a finding, typically the prevailing trademark owner desires injunctive relief (in addition to damages) against the infringer–in the form of a court order prohibiting the infringer from using the too-similar mark. That form of equitable relief cannot be determined by a jury and has to come from the judge. Still, it seems like it might be useful for the judge, in crafting the injunction, to know why the jury felt the marks were so similar as to create customer confusion. This intuition has recently come to bear as the litigation between Buc-ee’s and Choke Canyon has progressed past trial.

Earlier this week, Buc-ee’s moved for a permanent injunction against Choke Canyon (you can read the motion here). Buc-ee’s seeks a permanent injunction barring Choke Canyon’s use of a whole host of similar logos, which were part of a package of example uses submitted to the jury and sampled below:

Buc-ee’s says that Choke Canyon’s proposed injunction is not expansive enough because it does not include or cover any of the black and white logos, only the colorful ones. Buc-ee’s says it “fought tooth and nail”–great imagery, given that it is represented by a beaver mascot–to obtain the finding of infringement of all marks, regardless of whether they include color. But the color similarities (the red tongues and yellow backgrounds) seem pretty important in the context of an infringement battle that otherwise comes down to smiling beaver versus a thumbs-up alligator.

Even though the jury may have technically considered all of the examples provided by Buc-ee’s, an injunction is an equitable remedy, and the Lanham Act (15 U.S.C. §1116) provides that courts shall issue injunctions “according to the principles of equity and upon such terms as the court may deem reasonable.” As part of this inquiry, courts consider (1) whether the trademark owner has suffered irreparable injury, (2) whether damages are adequate to compensate for the injury, (3) whether, considering the balance of hardships between the trademark owner and infringer, the requested relief is warranted, and (4) whether the public interest would be disserved by a permanent injunction. Courts frequently grant only limited or qualified injunctions and tailor them to the facts of the case, sometimes by restricting certain formats and locations and requiring disclaimers or corrective advertising.

This is all to say that the scope of an injunction in this case and others depends on the circumstances and the court’s view of what is equitable and reasonable–a flexible standard. In trademark, courts focus on what relief is necessary to remedy and prevent consumer confusion, as well as the potential effects an injunction would have on lawful competition–an important factor that should not be overlooked in this case (perhaps not only as to the parties, but also as to the precedent the court might set generally). What do you think that might be? Leave a thought in the comments below.

About a week ago, we reported on an interesting case out of the Southern District of Texas involving two competing convenience stores with cartoon animal mascots: Buc-ee’s (a beaver) and Choke Canyon (an alligator).

As someone who has personally visited Buc-ee’s stores, I can tell you that they are quite the destination. Buc-ee’s tend to be absolutely massive, with checkout lanes (everything’s bigger in Texas). People even buy T-shirts with Buc-ee’s logos on the front, with various Texan sayings on the back. I personally own three of them. So it’s kind of an understatement to call Buc-ee’s a “convenience store,” by Minnesota standards. And one can hardly complete a description of Buc-ee’s without noting that it is considered to have the “best bathrooms in Texas.”

Credit: Houston Chronicle

Choke Canyon? Yeah, its locations are pretty big too, but the mascot is far less cuddly. Though, it has a nice saying above the exit that probably wouldn’t work at Buc-ee’s: “See ya later, alligator.”

Credit: Yelp

Buc-ee’s sued Choke Canyon for a variety of claims, including: trademark infringement, dilution, unfair competition, and unjust enrichment. We cover these topics frequently on DuetsBlog (check out the topics column).

I must admit that when I first read about the suit, I could hardly believe it. I agree with my colleague that “the best I see from this case is that Choke Canyon may make consumers think of Buc-ee’s stores and beaver, but consumers don’t seem likely to assume that that there is a connection between the two.” And I also think that ” if it weren’t May, I’d assume this was an April Fools Day joke.”

But it’s no joke, and after a four-day jury trial and six hours of deliberation, Buc-ee’s won on all fronts. Specifically, the jury answered six questions (downloadable here):

  1. On Buc-ee’s claims for trademark infringement of its Buc-ee’s Logo, do you find for Buc-ee’s or Choke Canyon?
    • Jury answer: Buc-ee’s
    • Interestingly, the jury sent one note to the District Judge during deliberations, asking “Does the logo to be considered by the jury in rendering an infringement judgment include a version without words?” To which the Judge responded, “Yes.”
  2. Do you find that Buc-ee’s Logo was famous throughout Texas before Choke Canyon’s use of the Choke Canyon Logo?
    • Jury answer: Yes
  3. Because the jury answered “yes” to question 2, they skipped question 3 (which pertained to specific geographic areas in Texas).
  4. On Buc-ee’s claim for dilution by blurring of its Buc-ee’s Logo, do you find for Buc-ee’s or Choke Canyon?
    • Jury answer: Buc-ee’s
  5. On Buc-ee’s claim for unfair competition, do you find for Buc-ee’s or Choke Canyon?
    • Jury answer: Buc-ee’s
  6. On Buc-ee’s claim for unjust enrichment, do you find for Buc-ee’s or Choke Canyon?
    • Jury Answer: Buc-ee’s

I am surprised by the generality of the questions presented to the jury, and it’s interesting that the jury was not asked about damages–perhaps the issue was bifurcated and will be tried to a different jury.

Question 1, and the jury note, suggests to me that the jury was allowed to focus purely on the similarities between the cartoon animals in the above logos, disregarding Choke Canyon logo’s ribbon stating “Choke Canyon Travel Centers.” But even then, the only obvious similarities are the orientation of the mascots, the yellow background, the wearing of a hat, and their smiles and red tongues. It is hard to believe those basic, nominal characteristics are enough to show consumer confusion and infringement. Maybe Choke Canyon has a good chance on appeal or at judgment notwithstanding the verdict.

And I cannot help but wonder, in view of Question 2, whether the fact that Buc-ee’s mark was famous throughout Texas prior to Choke Canyon’s use of its alligator mark played the most important role in the jury’s verdict. Perhaps the jury felt that Choke Canyon intended to ride on Buc-ee’s mark. Indeed, at closing argument, Buc-ee’s counsel reminded the jurors that a survey showed more than 80% of Texans recognize the Buc-ee’s logo. But I tend to agree with Choke Canyon’s closing argument that the lawsuit seems directed at stifling competition, rather than truly protecting consumers–pointing to Buc-ee’s own prior statement that it only noticed the potential for consumer confusion when Choke Canyon began buying property in towns where Buc-ee’s operates. I find it hard to believe that a reasonable consumer would seriously confuse the two mascots and think they were associated. But apparently two actual-consumer witnesses testified in Buc-ee’s favor on this point. Texas sure is a strange place sometimes.

— Jessica Gutierrez Alm, Attorney

Fantasy Live Role Playing Characters, Hardenstein 2014

Live Action Role Playing (LARP or LARPing) usually involves Renaissance Festival worthy costumes, foam medieval weapons, and an intense dedication to not breaking character.  I can’t say I’ve ever had the privilege of participating in a LARP event, but I also can’t say I’d turn down the opportunity.

A different kind of battle—the intellectual property kind—is being fought over the sale of some foam LARPing arrows.  Jordan Gwyther, a church pastor who sells LARPing equipment on the side, is being sued by the proverbial Goliath, Global Archery Products, Inc.  Jordan Gwyther owns LARPing.org and UpshotArrows.com, both of which offer foam tipped arrows for sale to LARPing enthusiasts.  Gwyther doesn’t manufacture the arrows; he imports and sells them.  Global Archery initially sued for patent infringement, trademark infringement, false advertising, and unfair competition.

The patent infringement claims relate to Global Archery’s two U.S. utility patents, each entitled “Non-Lethal Arrow.” The patents were granted in 2013 and 2015.

Here are some images from Global Archery’s patents:

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The scope of a utility patent, however, is defined by it numbered “claims.”  Claim 1 of one of the patents, for example, is directed to:

A non-lethal arrow, comprising:

a shaft; and

a foam tip assembly connected with an end of the shaft, wherein said foam tip assembly comprises a tip connector having a foam tip overmolded to at least a portion of the tip connector such that said foam tip is securely attached to said tip connector.

And here are some of Gwyther’s arrows accused of infringing the Global Archery patents:

IDV-03005_1_IDV-02002

At least upon first glance, there are surely some similarities here.

Gwyther responded to the lawsuit by launching a GoFundMe page with this video, asking the LARP community for help.  In the video, Gwyther claims that if Global Archery succeeds in its lawsuit against him, they will likely succeed in suing other foam arrow distributors and effectively end LARP archery in the U.S.

Global Archery motioned the court for a temporary restraining order and preliminary injunction to remove the video, stating the video led to “hateful phone calls, emails, and [social media] posts.”  Global Archery’s efforts at a so-called “gag order” did not sit well with the LARP community or the more general online community.  As a result, tech company Newegg joined in the fight, calling Global Archery a patent troll, and offering $10,000 and the proceeds from some anti-patent troll t-shirts to Gwyther’s cause.

Newegg_Anti_Troll_Shirt
Newegg states, “Proceeds from the sale of this shirt will be used to support Mr. Gwyther’s legal defense fund.”

But is Global Archery really a patent troll?  There are a few ways to define a patent troll.  Usually, the term is used to refer to a non-practicing entity—a company that owns patents for the purpose of collecting license fees and/or settlement money.  Non-practicing entities do not actually make, use, or sell the things their patents cover.  That definition does not seem to apply to Global Archery, however, since it is a company directly involved in various forms of archery, even if it does not market directly to the LARP community.  Other times, “patent troll” is used to refer to a patent holder using its patents to assert overly broad and even baseless claims against others in order to collect settlement checks.  This definition, too, seems inapplicable given the apparent similarities between the patent claim language and Gwyther’s arrows.  Perhaps a more broad definition of a patent troll is simply a large company that enforces its patent rights against smaller companies?

Patent troll or not, the patent claims were recently dropped.  Gwyther cited a German patent, predating Global Archery’s patents, as invalidating prior art.  Here are a couple images from the German prior art patent:

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After reviewing the German patent, Global Archery voluntarily dismissed the patent infringement claims against Gwyther.  According to the online file histories, neither of Global Archery’s two patents received much push back from the U.S. Patent Office prior to allowance.  Apparently, Global Archery decided it would be safer to drop the patent infringement claims against Gwyther than be forced to defend the novelty and non-obviousness of its patents.

Invalidity is a frequent offensive strategy to combat patent infringement claims, and Gwyther did well to bring in the German patent.  Gwyther won the battle, it seems, but the war rages on.  It will take something stronger than foam arrows to defeat the remaining trademark, false advertising, and unfair competition claims asserted in the suit.

Simon Bennett and Rachel Cook Fox Williams LLP

Chocolate giants Nestle and Cadbury have been trading blows in the UK and European Courts for several years. This latest round in front of the UK Court of Appeal related to Cadbury’s application to register the color purple (to be specific Pantone 2685C) for the packaging of specified products, including chocolate in bar and tablet form. Cadbury has been using purple for its packaging since 1914 and the UK trade mark registry had, in granting the application, accepted that the use of the color had acquired distinctiveness.

But this wasn’t the end. Nestle had lost the first two rounds but persevered. Under EU law a single color is, in principle, capable of being registered as a trade mark, whether it is spatially defined or not, although the Courts and the Registry generally will cast a sceptical eye on applications, usually requiring evidence of acquired distinctiveness.

Any trade mark application must be capable of graphic representation and distinguish the goods or services of one undertaking from those of other undertakings. Both of which really go without saying. European cases have built upon these aspects – requiring that marks be “clear, precise, objective and durable” and not relate to a property of the product being registered. All these criteria are intended to stop a color trade mark from allowing one business to obtain an unfair competitive disadvantage over other businesses.

Where did it go wrong for Cadbury? Cadbury’s application had stated that the mark would be applied to the whole visible surface of the packaging or be the predominant color applied to the whole visible surface of the packaging. Sufficiently certain? Cadbury thought so, the Registry thought so (even the guidance issued by the Registry on the description of color marks said that this was acceptable), the High Court thought so but the Appeal Court said no. As the mark was not fixed to specific depictions then it embodied a “multitude of different visual forms” and was too uncertain to be valid. The Court said that to find otherwise would allow Cadbury an unfair competitive advantage.

Stepping back from the Judgment, this does seem a little far fetched. There is no necessity for purple Pantone 2685C to be used for packaging of chocolate and it is difficult to see what competitive advantage Cadbury would in reality gain. However, this Judgment again shows up that color trade marks don’t just face a hard time in the US Courts.

Where do we go from here? Well, what is clear is that Cadbury will try to head to the UK Supreme Court. However, other holders of color trade marks may not be sitting comfortably in their seats. There are many registrations that do not have any depiction or description attached to them – following Cadbury these in theory would be invalid. Equally, while applications for goods could be submitted with pictures of their use, it is far more difficult to see how this would be applied to services.

Therefore, overall, this Judgment is likely to undermine the ability to register single color trade marks in Europe at all and seems a further barrier in the attempts to extend trade mark law to cover more “exotic” aspects of goods and services outside of a word or a logo.

Who would you expect to find sitting at the end of the bar in this recently re-named Minneapolis sports bar, formerly known as Halek’s Bar?

What if you were to queue a very familiar tune to these lyrics, would that help?

Yeah, I was thinking of these guys too:

But, what if these guys have nothing to do with it? And what if CBS Studios, owner of the Cheers brand, has nothing to do with this place either?

Are any permissions required? If so, who do you need them from? And, what legal theories are potentionally implicated? Copyright? Trademark? Unfair Competition? Misappropriation? Right of Publicity? Any others?

This signage would be great fodder for a law school exam in an intellectual property course, agree? Feel free to make up your own hypothetical on what adorns the walls inside, I’ve never been.

If the interior in your hypothetical plays up what one comment on the bar’s Facebook page suggests (“This place has been loved by many over the years; full of working class people. You could definitely call it the cheers bar of Minneapolis.”), beware Conan Properties, Inc. v. Conans Pizza, Inc., finding likelihood of confusion with use of Conan’s Pizza for a restaurant featuring decor that evoked the theme of the character “Conan the Barbarian.”

Gentle reminder, when you or your client is tempted by a name that everyone knows, it might be prudent to also visit a place where everyone knows your name (and everyone knows your rights under the intellectual property laws), so you can minimize the chances of this becoming the most applicable theme song: “Making your way in the world today takes everything you’ve got.”

A while back, I discussed the New York State Department of Development’s enforcement efforts to prevent others from using the I♥NY logo. It looks like the West Coast may have learned something from the East Coast, as San Francisco’s Bay Area Rapid Transit District (affectionately known as BART) has been sending out cease and desist letters of its own.

Nate Tan is a San Francisco artist who runs an online store that sells clothing with a San Francisco flair. Until recently, Tan had been selling the shirt below:

BART sent Tan a letter demanding that he cease sales of the shirt (Tan appears to have quickly removed the shirt, and likely others as the store appears a bit bare at the moment).  On its website, BART does not expressly reference its ticket as part of its intellectual property portfolio. BART does have registrations for its BART and BART BA and Design marks in Classes 16 and 39. An image of an actual ticket appears below:

Now, the likelihood of someone confusing Tan’s t-shirts with BART’s transit maps and transportation services is about as likely as a Boston Red Sox fan confusing the Yankees with the Mets. While the situation might appear to some as a case of trademark bullying, Tan has a few things working against him. First, Tan incorporated BART’s “BA and Design” mark as it appears on a real ticket, albeit with additional material to read BAY AREA rather than BART BA. The differences include the text on the left, displaying time of use on a real ticket, but which Tan used to display local area codes. Also, the vertical on the text apparently reads “All Aboard! Destination: Planet Rock. Get Your Ticket!!!”

Unfortunately, while Tan might be safe under the shorthand test for likelihood of confusion, it is important to remember that BART need not prove confusion of products – i.e., did people think this Prado bag was a Prada bag – but instead simply confusion as to source: has BART somehow endorsed the product or does it have some affiliation or connection with the product. And, as the Chicago Transit Authority website demonstrates, transit authorities can sell t-shirts (and baseball caps, mugs, purse holders, and mouse pads – which I assume are on clearance).

It isn’t obvious that BART would succeed if it were to sue Tan, but it is equally, if not more, unclear whether Tan has a defense. What matters most is that Tan is not likely making enough money to justify defending his acts. Given all the foregoing, it isn’t hard to understand why Tan quickly complied with BART’s request. What I don’t understand though is that with strikes looming, why would BART want to give its public image another hit? Tan, and his purchasers, are choosing to celebrate and cast a positive image on BART’s services. From a marketing perspective, discouraging that publicly (and looking at least a little bit like a bully) can only hurt your image. Of course, maybe BART is planning on rolling out their own shirts. They’ll have to make up for some of the lost fares if the strikes go into effect…

About a week ago another interesting federal intellectual property case was filed in the District of Minnesota: Fantasy Flight Publishing, Inc. v. Puffin Software et al.

Although the four count complaint includes a federal unfair competition claim, a Minnesota deceptive trade practices claim, and a common law unjust enrichment claim, the case really appears to be centered around the copyright infringement claim.

Plaintiff Fantasy Flight asserts that its copyright in the Battlelore® board game has been infringed by the "substantially similar" iPad game called Viking Lords:

"The Viking Lords game is simply an iPad version of the BattleLore® game under a different name. Defendant Päivinen has publicly acknowledged that he and some friends initially developed Viking Lords as a computer version of the BattleLore® game. Päivinen first approached Plaintiff with a prototype. However, after Plaintiff was slow to respond to his approach, and seeing the explosive growth of the iPad devices and platform, Defendant Päivinen and his friends decided that they had a great opportunity to capitalize on their computer version of the BattleLore® game by distributing and selling it through the Apple App Store."

While the complaint includes some language that you would expect to see in an unfair competition claim under Section 43(a) of the Lanham Act, references such as "likely to cause confusion," "business goodwill" and "exclusive rights," there is no claim that the Battlelore trademark has been infringed nor any allegation that any non-traditional trademark or trade dress rights exist or have been infringed, so it is unclear exactly what "exclusive rights" have been violated under Section 43(a) of the Lanham Act.

To prevail on its federal Lanham Act unfair competition claim, Fantasy Flight will need to prove that it owns distinctive common law trademark rights that have been infringed. Since Fantasy Flight has not alleged infringement of the Battlelore trademark, perhaps it intends to rely on non-traditional trademark rights, such as trade dress or the look and feel of the BattleLore® game.

If so, it needs to say so, but, to date, the initial complaint fails to specifically identify any traditional or non-traditional common law trademark rights that have been violated, and it has failed to articulate the elements of a non-functional and protectable common law trade dress right.

Perhaps the most intriguing line in the complaint is the assertion and admission that "Plaintiff is currently ignorant of the true business form of Puffin Software." Personally, I’d choose a different word to explain when I don’t know and can’t figure out something. Ignorant is too easily confused with stupid.

Although it is undoubtedly true for me, instead of saying, "I’m ignorant when it comes to board games involving war strategy, adventure, and fantasy," I’d probably say something more like "I’m unaware or that I have no particular knowledge or experience with those kinds of games."

In any event, given the apparent pleading failures in the complaint, only time will tell whether a motion to dismiss the Lanham Act claim might reveal one more point of ignorance for Plaintiff.